Introduction

Counterfeiting activity has long been an issue of concern for Canadian owners of intellectual property rights (“IPR”). While recent progress has been made both by way of court decisions and statutory reform, the potential damage to IPR owners that are subjected to counterfeiting activity continues to be an issue of significant concern. Increasingly, higher learning institutions, such as our universities, institutes and colleges, have become aware of the misappropriation of their valuable brands. For example, a number of British Columbia-based higher learning institutions have recently had to respond to issues related to marketers of counterfeit athletic wear, which made unauthorized use of well-known university and college logos. Further, the scope of counterfeiting activity includes the counterfeiting of degrees themselves with a number of active websites offering counterfeit Bachelor’s, Master’s, and Ph.D. Degrees, emblazoned with the institutional logo of your choice, for approximately $300 per degree.

To be in a position to effectively respond to IPR counterfeiting activity, higher learning institutions should have both an arsenal of IPR which can be enforced against counterfeiters, as well as a coordinated approach between the institution and its legal counsel to efficiently and effectively respond to such activity.

Higher Learning IPR Arsenal: Trade-marks and Copyrights

Typically, brand owners rely on trade-marks and copyrights as their IPR of choice to protect their brand.

Trade-marks

In the higher learning institution context, a trade-mark is a word (or words), a design, or a combination of these, used to identify the goods or services associated with one higher learning institution so as to distinguish its goods or services from those of others in the marketplace. For example, trade-marks such as “SIMON FRASER UNIVERSITY” or “UBC” distinguish the high-quality educational services associated with these institutions from those of other institutions that might attempt to utilize a similar name. Universities, institutes and colleges may obtain protection for their trade-marks under Section 9 of the Trade-marks Act, which is an advantage that non-public commercial enterprises do not enjoy. More specifically, Sections 9(1)(n)(ii) and (iii) of the Act provide that any “university” or “public authority” may request that the Registrar give public notice of the adoption and use by that university or public authority of any badge, crest, emblem or mark. Publicly-funded colleges and institutes will, in most instances, constitute “public authorities” and may take advantage of Section 9 so long as they have adopted and used the badge, crest, emblem or mark as an “official mark” for wares or services.

Once public notice has been given by the Trade-marks Registrar of the adoption and use of an official mark in Canada by a university or public authority, no other person may adopt, use or register a trade-mark in Canada that is the same as, or is likely to be mistaken for, the official mark, without consent of that university or public authority. As such, an official mark has a much broader scope of protection than a conventional trade-mark, since it is not restricted to any specific wares or services.

While most universities, institutes and colleges utilize Section 9 marks as a key weapon in their trade-marks arsenal, certain higher learning institutions have adopted the approach of registering ordinary (i.e., non-Section 9) trade-marks in addition to their Section 9 marks. This approach of bolstering official marks with non-Section 9 marks is a reasonable course of action given that, at present, Canadian customs-based remedies are only available to registered trade-mark owners, and not Section 9 mark owners.

Copyright

Copyright provides protection for, among other things, original literary or artistic works. From a higher learning branding perspective, copyright protection exists for original artistic works such as an original university logo that is used on a university’s athletic wear. While the Copyright Act stipulates that it is not an infringement of copyright to reproduce a design applied to a useful article when more than 50 articles have been produced, exceptions found in the Copyright Act allow for copyright protection when artistic works are used as a trade-mark. This interplay between copyright and trade-mark protection is an important part of effective enforcement of a higher learning institution’s IPR as infringement of a design-related trade-mark can result in causes of action under both the Copyright Act and the Trade-marks Act.

While it is generally well known that copyright subsists in original works without the need for a formal registration, in the higher learning context, where certain copyright-protected works, such as university logos or crests, have greater value than many other copyright-protected works, there are certain advantages to obtaining a formal copyright registration. Importantly, in court proceedings, a formal copyright registration is recognized as evidence that copyright exists and that the entity registered is the owner of the copyright. Additionally, pursuant to Section 39(2) of the Copyright Act, a copyright registration effectively rebuts an innocent infringement defence. Accordingly, there are certain evidentiary and enforcement advantages to having a formal copyright registration; given the relatively low cost of obtaining a copyright registration, higher learning institutions should work with their intellectual property counsel to effectively manage their copyright registrations.

A Coordinated Approach

With a robust and enforceable IPR arsenal in hand, higher learning institutions need to coordinate their legal efforts by adopting the following steps:

1. Policing. It is important that higher learning institutions, together with their legal counsel, develop an effective and efficient policing strategy to monitor counterfeiting activity using their IPR arsenal.
2. Initial Response. Upon becoming aware of counterfeiting activity, it is also important that higher learning institutions take an effective approach for responding to such activity. Higher learning institutions may choose to initially respond by themselves or directly through their external counsel. Regardless of the choice made, the initial response, which is typically carried out through a cease and desist letter, should be timely, focused on the higher learning institution’s well-managed IPR, and the response should also be commercially appropriate for the higher learning institution’s desired outcome. Additionally, an initial response should (a) take into account the likelihood of whether the counterfeiting target in question has sufficient assets that are recoverable so as to justify the cost of securing judgment; and (b) consider how to effectively and efficiently secure such assets prior to and after judgment, as the case may be.
3. Settlement. Most often, counterfeiting activity need not result in expensive and protracted litigation as most disputes can be resolved through effectively negotiated and enforceable settlement agreements.
4. Commercial Litigation. Less often, counterfeiting activity results in litigation. In moving forward with litigation, higher learning institutions will want to engage counsel that has actual trial experience and a track record of obtaining and collecting upon judgments against defendants.

While the development of a coordinated approach between higher learning institutions and their legal counsel will ultimately become more intricate than the four steps raised above, using these steps as requisite requirements, together with the development of a robust IPR arsenal, is a prudent way of developing an effective anti-counterfeiting program.